Intellectual Property - Brownstein Hyatt Farber Schreck

Today’s knowledge economy makes intellectual property assets—patents, trademarks, copyrights, trade secrets, data and business methods—prime currency. As a strategic partner offering a full panoply of intellectual property services, Brownstein Hyatt Farber Schreck partners with you each step of the process in effectively managing these assets to maximize your business goals. Whether it is recognizing and guarding against data privacy concerns, consulting on initial product clearance, developing, identifying and protecting innovation, or fighting for and defining boundaries for intellectual capital in an era of increasing technological capability and legal complexity, our team of skilled professionals is there by your side.

We are scientists and engineers, former in-house counsel, marketing and advertising consultants, certified privacy consultants, and former executives from technology, bioscience, media and engineering companies who take a forward-looking, broad-based approach to the management, analysis, protection and defense of your intellectual property.

Our diverse team procures, maintains and protects patents, trademarks, trade dress, copyrights and trade secrets at local, national and international levels. We counsel clients on technology, data privacy and brand matters and build comprehensive and cohesive intellectual property portfolios and strategies. We conduct audits, prepare and review licensing agreements, support joint ventures, and analyze corporate transactions. We guide product development from initial stages of research through regulatory approval, and research and prepare freedom to practice assessments and invalidity opinions, and often provide post-grant strategic counseling.

When your intellectual property assets become the subject of adversarial proceedings, either in court or before the United States Patent and Trademark Office, our team handles complex patent infringement litigation, Patent Trial and Appeal Board (PTAB) inter partes reviews, Trademark Trial and Appeal Board (TTAB) oppositions and cancellations, trade secret injunctions, and product seizures. We also work with foreign counsel to coordinate parallel procedures outside the United States. In addition, we work closely with our Business & Corporate Advisory, Mergers & Acquisitions and Private Equity groups in due diligence and document preparation for merger and acquisition deals that have an intellectual property element.

Recognition
Representative Matters
  • Served as intellectual property counsel to Encore Consumer Capital, a San Francisco-based private equity investment firm focused on the consumer products industry, in its acquisition of LORAC cosmetics. LORAC is a developer and marketer of branded, prestige color cosmetics that are distributed through specialty beauty retailers, department stores and online.

  • Responsible for managing intellectual property and data privacy for a $250 million general contracting and engineering firm.

  • Responsible for the management of the intellectual property portfolio for a Denver-based provider of digital signage and other visual software solutions with sales exceeding $75 million.

  • Patent No. 9,113,616: Genetically modified mice having humanized TCR variable genes.

  • Primary outside intellectual property counsel for a national software company that provides automated solutions for addressable advertising and digital advertising, builds repositories of advertising data, and creates aggregated unwired advertising networks for the cable and broadcast industry.

  • Responsible for the management of the intellectual property portfolio for a $100 million nutraceutical company specializing in supplements for the exercise and health industries.

  • Patent No. 9,043,996: Genetically modified major histocompatibility complex animals.

  • Served as intellectual property counsel to Encore Consumer Capital in its investment in Thanasi Foods, the Boulder, Colorado-based company that owns the BIGS Seeds and Duke’s Smoked Meats brands.

  • Served as intellectual property counsel to PAS Technologies, Inc., a portfolio company of KRG Capital Partners, LLC, in the sale of its Irish industrial gas turbine subsidiary to Knox Capital Holdings, LLC, a private equity investment firm.

  • Served as intellectual property counsel to Kroenke Sports & Entertainment, LLC in its acquisition of, and acquisition financing for, the Sportsman Channel and related properties from InterMedia Partners, LP.

  • Patent No. 8,871,996: Mice expressing human voltage-gated sodium channels.

  • Patent No. 9,204,624: Non-human animals with modifed immunoglobulin heavy chain sequences.

  • Served as intellectual property counsel to Encore Consumer Capital in connection with its majority investment in Seattle-based indie brand, butter LONDON

  • Represent Brownie Brittle, LLC, a snack foods company, in connection with its brand management and enforcement efforts, including social media enforcement.

  • Serve as intellectual property counsel to Yardi Systems, Inc., a real estate software and professional services company, in connection with its domestic and foreign brand management and enforcement, and copyright protection and enforcement efforts.

  • Represented KSL Capital Partners in its acquisition of a controlling interest in Miraval Resort & Spa, a luxury wellness spa in Tucson, Arizona, and its brand. Additionally, the firm negotiated joint venture/partnership agreement with the prior owner, and restructured Miraval as part of acquisition.

  • Served as intellectual property counsel to Tropicana Entertainment Inc. (the gaming vehicle of Icahn Enterprises LP) in the acquisition of the Lumiere Place Casino, HoteLumiere, and Four Seasons Hotel St. Louis, from certain subsidiaries of Pinnacle Entertainment, Inc . through the purchase of all of the equity securities of the Pinnacle entities that hold the assets associated with such properties.

  • Serves as intellectual property counsel to Tarte, Inc., a cosmetics and skin care company, in connection with its domestic and foreign brand management and enforcement activities and preparastion of licensing and marketing agreements.

  • Served as intellectual property counsel to Victory Park Capital Advisors in the sale of its portfolio company, Global Employment Holdings, Inc., to TZP Group.

  • Served as intellectual property counsel to Encore Consumer Capital and other owners in the sale of Zuke’s, LLC to Nestlé Purina PetCare Company.

  • Primary outside intellectual property counsel for restaurant and world famous chef regarding intellectual property and employment issues. Recently litigated potential TTAB opposition for one of the registered marks.

  • Represented Gaiam, Inc. in a carve out sale transaction in which it sold its non-Gaiam branded entertainment media distribution business to Cinedigm Inc. for $51.5 million.

  • Represented Fortune 100 bank in trade secret action in D. Kan regarding Agribusiness suppliers and lenders. After extensive briefing and discovery, helped achieve positive settlement on the eve of preliminary injunction hearing.

  • Represented the TriZetto Group, Inc. in its acquisition of Healthcare Productivity Automation, LLC, a Franklin, Tennessee based company that employs a highly advanced, cloud-based claims workflow tool, Health Mason.

  • Represented client company and employees in connection with trade secret and unfair competition claims. Successfully compelled arbitration of virtually all claims and obtained stay of entire action. Forced arbitration in more favorable jurisdiction for our clients. Secured settlement with no monetary payout by our clients and favorable covenants in favor of our clients.

  • Served as lead counsel for Flintco, LLC and Flintco West, Inc. in a state level qui tam action brought regarding alleged fraud in the procurement and billing of the $60 million dollar renovation of the University of New Mexico Arena (the "Pit"). In what may be the first state level false claims act case to be tried to a jury, Eric and his team were able to get a complete defense verdict on all claims.

  • Served as lead counsel to Defiant Technologies, Inc. in claims that Defiant undertook to unlawfully obtain licensing of certain intellectual property technology from Sandia National Laboratory, thereby depriving the Plaintiff of the ability to continue its economic development of similar technology. After obtaining complete summary judgment on all of Plaintiff's claims against Defiant, Eric tried a claim of malicious abuse of process against the original Plaintiff to a jury in Federal Court in Santa Fe, New Mexico, asserting that Plaintiff brought suit against Defiant to wrongfully prevent Defiant from gaining a competitive advantage in the market. As a result of the trial, Eric obtained judgment against the Plaintiff for $2 million and was able to collect same.

  • Served as special Nevada counsel to Tropicana Entertainment, Inc. and its subsidiaries and issued a legal opinion in connection with the refinancing of the company's existing term and revolving credit facilities.

  • Assisted Vail Resorts subsidiary Mountain News Corporation to acquire Skiinfo.com, Europe's leading snow-sports web site. Mountain News intends to combine the operations of Skiinfo.com with the operations of OnTheSnow.com, the industry leading snow-sports website currently operated by Mountain News. The combined digital operation will reach 23 million annual unique visitors, operating in 14 languages and 20 nations, the company said. In addition to operating its own websites, the operation will supply snow reports to some 1,500 other websites and media companies.

  • Represented Barden Nevada Gaming, LLC in the $18,000,000 sale, representing 100% of the equity, of the Fitzgerald's Casino and Hotel in Las Vegas.

  • Assisted Vail Resorts, Inc. and its subsidiary Mountain News Corporation, publisher of OnTheSnow the most visited snowsports website in the world, with intellectual property issues associated with the acquisition of SkiReport.com, the second most visited ski report website in North America.

  • Served as Nevada gaming, corporate, real estate and intellectual property counsel in connection with Station Casinos, Inc. and its operating subsidiaries' emergence from bankruptcy. Brownstein also handled the restructuring, including both asset and equity transfers and new organizational documents with the new owners, and new or amended credit facilities.

  • Served as lead counsel to Treasure Island, LLC in connection with the refinancing of its existing credit facility.

  • Represented a hotel property owner when an employee was wrongly accused of certain bad actions which were posted on an anonymous website. This accusation urged web users to boycott Brownstein's client's properties. The firm was successful in shutting down the defamatory website.

  • Negotiated a complex trademark settlement and consent agreement between the City of Las Vegas and Boyd Gaming Corporation regarding the use of the famous Fremont mark in connection with the City's downtown redevelopment district.

  • Served as counsel to the Flamingo Las Vegas Hotel and Casino in negotiation of the intellectual property and other rights necessary to develop a Margaritaville-themed gaming area at the Flamingo. This area is approximately 15,000 square feet and includes 22 table games and 220 slot machines.

  • Assisted Graham Packaging Company, L.P. in a $568 million strategic acquisition of another manufacturer and supplier. In the transaction, Graham Packaging Company acquired all of the limited partnership units of the target company from the company's limited partners and all of the stock of each of the company's three corporate general partners from their stockholders. A manufacturer and supplier of technology-based, customized blow molded plastic containers for the branded food and beverage, household, personal care/specialty and automotive lubricants product categories, Graham Packaging Company is a portfolio company of Blackstone Capital Group.

  • Represent an international asset management firm in obtaining regulatory approval in 38 states for the company to beneficially hold shares in 10 publicly-traded gaming companies. These approvals, which included applications for certification as an institutional investor in casinos, gaming manufacturers, gaming distributors and gaming suppliers, enabled the company and its affiliates and subsidiaries to passively invest in publicly-traded gaming companies.

  • Represented Vail Resorts, Inc. in its acquisition of Mountain News Corporation (MNC), which operates the world's most visited online snow sports portal, OnTheSnow.com. Mountain News Corporation is the top provider of snow reports to more than 1,200 web sites throughout the world, including approximately 400 news media websites.

  • Served as intellectual property counsel to Strategic Analytics Inc., a global software and services company in the retail lending industry, in connection with the sale of all of the outstanding stock of the company.

  • Assisted Aion Partners LLC in its corporate structuring and private placement of limited liability company units to raise equity for bringing its technology to market. Brownstein also secured the intellectual property rights for Aion to sell its proprietary, green technology that minimizes the occurrence of hospital-acquired secondary infections.

  • Represented Tropicana Atlantic City Corp. in its online services agreement with Gamesys Limited.

  • Represented Hard Rock Hotel Holdings, LLC in connection with the licensing of the Hard Rock Hotel and Casino Tulsa, an Indian casino owned by the Cherokee Nation, and the Hard Rock Hotel and Hard Rock Casino Albuquerque, an Indian casino owned by the Pueblo of Isleta.

  • Represented Station Casinos in a dispute over unauthorized third-party use of the trade dress and trademarks used in their distinctive Red Rock Casino Resort & Spa striped design.

  • Negotiated settlement of a trademark infringement lawsuit between two Las Vegas golf courses. This matter included alleged counterfeiting, service mark infringement, dilution, false advertising, false designation of origin and unfair competition.

  • Represented an industrial manufacturer as the plaintiff in trade secret litigation against former employees who were hired by a direct competitor.

  • Represented Icahn Associates Corp. in the $1.3 billion sale of its membership interests in American Casino and Entertainment Properties LLC, owner of the Stratosphere Hotel in Las Vegas and other gaming properties. The sale was to ACEP Holdings, LLC, an Affiliate of Whitehall Street Global Real Estate Limited Partnership 2007, the affiliated private equity group of Goldman Sachs.

  • Represented Meteorcomm LLC, a global, wireless telecommunications company providing data communications solutions and services, in general corporate and intellectual property licensing transactions.

  • Represented Wolf Creek Golf Club in a trademark infringement suit against a neighboring real estate developer attempting to capitalize on the goodwill associated with the Wolf Creek trademark. Mr. Firth prohibited the developer's use of the Hidden Wolf name, other Wolf marks and prominent photos of the client's golf course.

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Meet The Team

Cara L. Crowley-Weber, Ph.D. Shareholder T 303.223.1145 ccrowley-weber@bhfs.com
S. Craig Hemenway Shareholder T 303.223.1104 chemenway@bhfs.com
Evan M. Rothstein Shareholder T 303.223.1116 erothstein@bhfs.com
Paul J. Prendergast, Ph.D. Shareholder T 303.223.1194 pprendergast@bhfs.com
David S. Atkinson Of Counsel T 303.223.1105 datkinson@bhfs.com
Laura Bielinski Langberg Associate T 805.882.1438 llangberg@bhfs.com
Elissa A. Asaro Patent Agent T 303.223.1333 easaro@bhfs.com
Margaret Martinez Intellectual Property Practice Group Manager T 303.223.1453 mkmartinez@bhfs.com
Peter M. Jarvis Patent Agent T 303.223.1302 pjarvis@bhfs.com
Tamala Jonas Patent Agent T 303.223.1483 tjonas@bhfs.com
Randolph E. Treece, Ph.D. Patent Agent T 303.223.1362 rtreece@bhfs.com
Daniel Ackerman Of Counsel T 303.223.1199 dackerman@bhfs.com
Peter H. Ajemian Shareholder T 702.464.7003 pajemian@bhfs.com
Andrew J. Freyer Associate T 303.223.1148 afreyer@bhfs.com
Kevin J. Duffy Associate T 303.223.1231 kduffy@bhfs.com
Martha L. Fitzgerald Shareholder T 303.223.1472 mfitzgerald@bhfs.com
Matthew D. Francis Shareholder T 775.324.4100 mfrancis@bhfs.com
Ryan J. Cudnik Of Counsel T 775.398.3813 rcudnik@bhfs.com
Steven Caloiaro Associate T 775.398.3821 scaloiaro@bhfs.com
Benno M. Guggenheimer Shareholder T 303.223.1202 bguggenheimer@bhfs.com
Emily Holmes Shareholder T 303.223.1142 eholmes@bhfs.com
Van Aaron Hughes Of Counsel T 303.223.1253 vhughes@bhfs.com
Kacey L. Higginbotham Associate T 303.223.1296 khigginbotham@bhfs.com
Patrick B. Hall Associate T 303.223.1129 phall@bhfs.com
Adam McMillen Of Counsel T 775.398.3808 amcmillen@bhfs.com
Erin Lewis Shareholder T 702.464.7087 elewis@bhfs.com
Ian V. O'Neill Shareholder T 303.223.1210 ioneill@bhfs.com
Kerry J. LeMonte Associate T 303.223.1244 klemonte@bhfs.com
Peter J. Nagle Associate T 303.223.1180 pnagle@bhfs.com
Jessie L. Pellant Associate T 303.223.1269 jpellant@bhfs.com
Michael D. Rounds Shareholder T 775.398.3800 mrounds@bhfs.com
Nancy Simon Of Counsel T 303.223.1122 nsimon@bhfs.com
Timothy R. Schulte Of Counsel T 303.223.1240 tschulte@bhfs.com
Adam Yowell Associate T 775.398.3803 ayowell@bhfs.com
Arthur Zorio Shareholder T 775.398.3812 azorio@bhfs.com
Lindsey A. Williams Associate T 702.464.7056 lwilliams@bhfs.com
Rita S. Wu, Ph.D. Shareholder T 303.223.1250 rwu@bhfs.com
Stuart Wagner Associate T 303-223-1267 swagner@bhfs.com
Richard E. Zelenka Of Counsel T 303.223.1126 rzelenka@bhfs.com
Dawn R. Sullivan Paralegal T 303.223.1404 drsullivan@bhfs.com
Janice Brown Paralegal T 303.223.1473 jbrown@bhfs.com
Julie Obermeyer Paralegal T 702.464.7079 jobermeyer@bhfs.com
Jeff Tillison Paralegal T 775.398.3819 jtillison@bhfs.com
Kemper R. Chafin Paralegal T 303.223.1353 kchafin@bhfs.com
Kara Kenfield Paralegal T 303.223.1485 kkenfield@bhfs.com
Nancy Lindsley Paralegal T 775.398.3802 nlindsley@bhfs.com
Shannon M. Kline Paralegal T 702.464.7088 skline@bhfs.com
Sheri S. Fisher Paralegal T 303.223.1359 sfisher@bhfs.com
Stephanie Klepp Paralegal T 303.223.1395 sklepp@bhfs.com
Valerie H. Brown Paralegal T 303.223.1318 vbrown@bhfs.com